Over the last few years, the courts have made it clear that obviousness-type double patenting applies in Canada and that divisional applications are vulnerable to such an attack. While there is no statutory protection in the case of enforced divisional applications, the Supreme Court of Canada has stated that patents granted on divisional applications "directed by the Patent Office" should not be open to attack by reason only of the original patent. For this reason, we generally recommend first including claims that an applicant may wish to file in a proposed voluntary divisional application in the parent application and awaiting a requisition from the examiner based on lack of unity of invention.
In a recent practice notice, the Patent Office has indicated that where an examiner is of the opinion that there is lack of unity of invention, he will either group the claims into separate inventions and defer further examination until the question of unity has been resolved, or he will of his own initiative elect a group for search and examination without consultation based, for example, on the claims in a corresponding foreign patent.
Where an impasse is reached with the examiner over the question of unity, the matter will be referred to the Commissioner of patents, who, upon deciding that the application does not comply with the unity requirements, will issue a direction in accordance with the Patent Act.
This new practice raises an interesting question. Namely, whether an applicant who elects a particular group for examination and files a divisional application on the non-elected group in response to an opinion from the examiner that the application lacks unity, and without seeking a direction from the Commissioner under the new practice, would benefit from the protection of an enforced divisional application suggested by the case law. Until we get further clarification, where an examiner raises a lack of unity objection under this new practice, it may be wise to insist on a direction from the Commissioner before cancelling any claims to be made the subject of a divisional application.
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Richard Mitchell |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
